American Honda Motor Co., Inc.v.Vehicle Operation Technologies, LLCDownload PDFPatent Trial and Appeal BoardJun 1, 201510684031 (P.T.A.B. Jun. 1, 2015) Copy Citation Trial@uspto.gov 571-272-7822 IPR2014-00594, Paper 49; -00600, Paper 46; -00601, Paper 49; -00602, Paper 50;-00603, Paper 56 Entered: June 1, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ AMERICAN HONDA MOTOR CO., INC., FORD MOTOR COMPANY, BMW OF NORTH AMERICA LLC, and NISSAN NORTH AMERICA INC., Petitioner, v. VEHICLE OPERATION TECHNOLOGIES, LLC, Patent Owner. ____________ Case IPR2014-00594 Case IPR2014-00600 Case IPR2014-00601 Case IPR2014-00602 Case IPR2014-00603 Patent 7,145,442 B1 1 __________ Before GLENN J. PERRY, BRIAN J. McNAMARA, and BART A. GERSTENBLITH, Administrative Patent Judges. McNAMARA, Administrative Patent Judge. JUDGMENT TERMINATION OF THE PROCEEDING WITH RESEPCT TO NISSAN NORTH AMERICA, INC. 37 C.F.R. § 42.73 1 This Order addresses issues that are identical in related cases. Therefore, we exercise our discretion to issue one order applicable for all captioned cases. The parties, however, are not authorized to use this style heading in subsequent papers. IPR2014-00594; -00600; -00601; -00602; -00603 Patent 7,145,442 B1 2 Nissan North America, Inc. (“Nissan”) and Vehicle Operation Technologies, LLC (“Patent Owner”) have requested that the involvement of Nissan in the identified trial proceedings (“the Subject Proceedings”) be terminated pursuant to a settlement. On January 6, 2014, the Board authorized Nissan and Patent Owner to file a joint request to terminate and a joint request to file the settlement as business confidential under 37 C.F.R. § 42.74(c) in each of the Subject Proceedings. On January 26, 2015, Nissan and Patent Owner filed a Joint Motion to Terminate the Inter Partes Review with Respect to Nissan and a Joint Request to File Settlement Agreement as Business Confidential Information and Kept Separate in each of the Subject Proceedings. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. 2 With their Motion to Terminate and Request to File Settlement Agreement as Business Confidential Information and Kept Separate, Nissan and Patent Owner also filed a copy of a written settlement agreement 3 and a stipulated dismissal of co-pending district court litigation and resulting Order. 4 During a telephone conference on April 2, 2015, we discussed the requirement that “[a]ny agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such 2 IPR2014-00594, IPR2014-00601, and IPR2014-00602, Papers 40 and 41, respectively; IPR2014-00600, Papers 32 and 33, respectively; IPR2014-00603, papers 45 and 46, respectively. 3 The settlement agreement was filed as Exhibit 2019 in IPR2014-00594, IPR2014- 00601, IPR2014-00602, and IPR2014-00603, and as Exhibit 2018 in IPR2014- 00600. 4 The stipulated dismissal was filed as Exhibit 2020 in IPR2014-00594, IPR2014- 00601, IPR2014-00602, and IPR2014-00603, and as Exhibit 2019 in IPR2014- 00600. IPR2014-00594; -00600; -00601; -00602; -00603 Patent 7,145,442 B1 3 agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties.” 35 U.S.C. § 317(b). On April 10, 2015, the parties filed a Notice with Respect to the Agreement Between Patent Owner and Nissan stating that the document submitted on January 26, 2015, in each of the subject proceedings “is the only agreement between Patent Owner and Nissan relating to the patent at issue in the above captioned inter partes review.” 5 A decision by the Board to institute a trial in each of the Subject Proceedings was entered on October 15, 2014. As noted above, the parties filed a stipulated Motion for Dismissal with Prejudice of the co-pending litigation in the district court between Nissan and Patent Owner and resulting Order in each of the Subject Proceedings. Under these circumstances, the Board determines that it is appropriate to enter judgment 6 and terminate the trial with respect to Nissan without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the Joint Motion to Terminate the Inter Partes Review with Respect to Nissan is GRANTED and; FURTHER ORDERED that the Joint Request that the Settlement Agreement Be Treated as Business Confidential Information, which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED. 5 IPR2014-00594 and IPR2014-00601, Paper 44; IPR2014-00600, Paper 38; IPR2014-00602, Paper 43; and IPR2014-00603, Paper 49. 6 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. IPR2014-00594; -00600; -00601; -00602; -00603 Patent 7,145,442 B1 4 PETITIONER: (via electronic transmission) Eric A. Buresh Jason R. Mudd ERISE IP, P.A. eric.buresh@eriseip.com jason.mudd@eriseip.com John M. Caracappa Stephanie L. Roberts STEPTOE & JOHNSON LLP jcaracap@steptoe.com sroberts@steptoe.com Lionel M. Lavenue Joshua L. Goldberg FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP lionel.lavenue@finnegan.com joshua.goldberg@finnegan.com Reginald J. Hill Chad J. Ray JENNER & BLOCK LLP rhill@jenner.com cray@jenner.com PATENT OWNER: (via electronic transmission) Gregory Howison HOWISON & ARNOTT GHowison@dalpat.com Monica Tavakoli James Arnott BUETHER JOE & CARPENTER, LLC Monica.Tavakoli@BJCIPlaw.com James.Arnott@BJCIPlaw.com Copy with citationCopy as parenthetical citation
